Contract analysis

1. I, Dr. Caroline Ashford, have been retained by Calderwood & Harkness LLP, counsel for Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"), to provide expert opinions on matters of infringement relating to certain United States patents owned by OWS and asserted against Lumicore Technologies, Inc. ("Lumicore" or "Defendant") in this action. This Appendix B constitutes a component of my Expert Report and is

2. The purpose of this Appendix is to set forth my detailed analysis under the doctrine of equivalents ("DOE") for specific claim limitations in three asserted claims where literal infringement may be contested by Defendant. Specifically, this Appendix addresses the following claims and limitations: (a) Claim 3 of U.S. Patent No. 10,891,193 (the "'193 Patent"), titled "High-Bandwidth Coherent Optical Transceiver Inte

3. This Appendix supplements the literal-infringement analysis set forth in my main Expert Report and in Appendix A (Claim Charts). For each of the three claim limitations identified above, the main Expert Report and Appendix A present detailed literal-infringement contentions. This Appendix provides an alternative and additional analysis under the doctrine of equivalents in the event that the Court or jury determine

4. For each DOE contention presented in this Appendix, I apply the function-way-result test as required under the doctrine of equivalents, demonstrating that the accused elements in Lumicore's products perform substantially the same function, in substantially the same way, to achieve substantially the same result as the corresponding claim limitations of the '193 and '015 Patents. I further address the applicability

5. The specific accused products to which each DOE contention applies are as follows: (a) The LumiLink 400G-ZR+ transceiver module (launched Q3 2022; Lumicore product number LL-400-ZRP-01) — accused of infringing Claims 3 and 7 of the '193 Patent under the doctrine of equivalents; (b) The LumiLink 800G-DR8 transceiver module (launched Q1 2023; Lumicore product number LL-800-DR8-02) — accused of infringing Claims 3 an

6. Each of these products has been the subject of third-party teardown analysis by Benchmark Semiconductor Analysis, LLC, the results of which I have reviewed in detail and upon which I rely, in part, in forming my opinions. The analysis presented in this Appendix is further supported by Lumicore's own design files and RTL schematics produced in discovery, deposition testimony of Lumicore's Chief Technology Officer a

I.B. Qualifications and Basis for Opinions

7. My qualifications to render the opinions set forth in this Appendix are summarized below. A complete curriculum vitae is attached to my main Expert Report as Exhibit 1 thereto, and my full qualifications statement appears at Section II of the main Expert Report.

8. I am a tenured Professor of Electrical Engineering & Photonics at the Northfield Institute of Technology in Evanston, Illinois, where I have held a faculty appointment since 2008. I hold a Ph.D. in Electrical Engineering from the Massachusetts Institute of Technology (2005), with a doctoral thesis on "Integrated Coherent Receivers on Silicon-on-Insulator Platforms," and an M.S. in Electrical Engineering from Stanf

9. In formulating the opinions expressed in this Appendix, I have applied the perspective of a person of ordinary skill in the art ("POSITA"). Consistent with the definition I set forth in my main Expert Report and in my claim construction declaration filed on November 15, 2024, I define a POSITA as an individual possessing a Master of Science or Doctor of Philosophy degree in electrical engineering, photonics, appli

10. In preparing this Appendix, I have reviewed and considered the following categories of materials, among others: (a) Benchmark Semiconductor Analysis, LLC teardown reports: (i) Report dated December 12, 2022, prepared by Kevin Ng, for the LumiLink 400G-ZR+ transceiver module (Bates Nos. OWS-BENCH-00001–00187); (ii) Report dated June 2023, prepared by Kevin Ng, for the LumiLink 800G-DR8 transceiver module (Bates No

11. A complete list of all materials reviewed in connection with both my main Expert Report and this Appendix is set forth in Exhibit 2 to the main Expert Report. I reserve the right to supplement that list and the opinions herein in light of any additional materials produced or made available subsequent to the date of this Appendix.

I.C. Summary of DOE Contentions

12. The following table summarizes the three doctrine of equivalents contentions presented in this Appendix:

13. It is important to emphasize that literal infringement is also asserted for each of these claims and accused products, as set forth in my main Expert Report and Appendix A. The doctrine of equivalents analysis in this Appendix provides an alternative basis for a finding of infringement in the event that the trier of fact determines that Lumicore's accused products do not literally satisfy one or more of the speci

14. The structure of this Appendix is as follows: Section II sets forth the governing legal framework for the doctrine of equivalents analysis; Sections III, IV, and V present the detailed DOE analysis for each of the three contentions; Section VI provides summary comparison tables and cross-references to annotated teardown photographs and design file excerpts; Section VII addresses anticipated counterarguments from

II. LEGAL FRAMEWORK FOR DOCTRINE OF EQUIVALENTS ANALYSIS

15. In preparing this Appendix, I have been instructed by counsel on the relevant legal principles governing the doctrine of equivalents. The following summary reflects my understanding of those principles as applied to the analysis herein.

II.A. The Function-Way-Result Test

16. Under the doctrine of equivalents, a product or process that does not literally infringe a patent claim may nonetheless be found to infringe if, as to each limitation of the claim, the accused element performs substantially the same function, in substantially the same way, to achieve substantially the same result as the corresponding claim limitation. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 6

17. Critically, the doctrine of equivalents is applied on an element-by-element basis, not to the claim as a whole. Warner-Jenkinson, 520 U.S. at 29. For each of the three DOE contentions in this Appendix, I have identified the specific claim limitation at issue and the specific corresponding element in Lumicore's accused products, and I have performed the function-way-result analysis with respect to that individual

18. The relevant time frame for the equivalence inquiry is the time of infringement, not the time the patent was issued. See Warner-Jenkinson, 520 U.S. at 37. For purposes of this Appendix, the relevant time frames are as follows: (a) For the LumiLink 400G-ZR+: Q3 2022 through the present, corresponding to the period from the product's commercial launch through the date of this report; (b) For the LumiLink 800G-DR8:

19. As I explain in the detailed analyses below, the equivalence between the claimed elements and Lumicore's accused elements existed at the time each product was launched and continues through the present. The structural variations employed by Lumicore were well understood in the silicon photonics field at the time of infringement as interchangeable approaches to the same technological objectives achieved by the pat

II.B. Prosecution History Estoppel Considerations

20. I understand that the doctrine of prosecution history estoppel may limit the scope of equivalents available to a patentee where the patentee narrowed a claim during prosecution to overcome a prior-art rejection. See Festo Corp. v. Fenmore & Co., 535 U.S. 722 (2002). Where a claim has been narrowed by amendment for reasons relating to patentability, there is a presumption that the patentee has surrendered the terr

21. Both the '193 Patent and the '015 Patent contain limitations that were narrowed during prosecution, and prosecution history estoppel is therefore a relevant consideration for each of the three DOE contentions in this Appendix. My analysis addresses estoppel as follows:

22. Regarding the '193 Patent: During prosecution, the "coherent detection module" limitation at issue in Claims 3 and 7 was narrowed in a response filed to overcome a rejection under 35 U.S.C. § 102 based on Takahashi et al., "Dense WDM Silicon Photonic MUX," IEEE Photonics Technology Letters (March 2014). As I explain in detail in Sections III.D and IV.D below, the Festo presumption does not bar the DOE contentions

23. Regarding the '015 Patent: Claim 12's "two-dimensional sub-wavelength grating" limitation was subject to a narrowing amendment during prosecution to overcome a rejection under 35 U.S.C. § 103 combining U.S. Patent No. 8,412,007 (Bergmann, issued April 2, 2013) with PCT/EP2015/071234 (Simonsen, published September 17, 2015). As I explain in detail in Section V.D below, the Festo tangential-relation exception appli

24. I further understand that the doctrine of equivalents must be applied in a manner that does not vitiate any claim limitation. See Brilliant Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1347 (Fed. Cir. 2013). The all-limitations rule requires that the DOE analysis preserve meaningful content for every limitation of the asserted claim; a finding of equivalence cannot effectively read a limitation out of the

25. For each of the three DOE contentions in this Appendix, I have confirmed that the analysis does not vitiate any claim limitation. In each case, the accused equivalent element in Lumicore's products is structurally and functionally distinct from the prior art, possesses the core technological characteristics of the claimed element, and differs from the claimed element only in a specific, narrow structural variatio

III. DOE ANALYSIS — '193 PATENT, CLAIM 3: "COHERENT DETECTION MODULE" LIMITATION

III.A. Claim Language and Context

26. U.S. Patent No. 10,891,193, titled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate," was filed on April 7, 2017, and issued on January 12, 2021. The '193 Patent claims priority to Provisional Application No. 62/499,117, filed April 7, 2017, which is a common priority document shared with the '015 Patent also asserted in this action. The named inventors are Dr. Jian-Wei Huang and Dr. P

27. Claim 3 of the '193 Patent depends from Claim 1. The full text of the relevant claims is reproduced below and is also attached as Exhibit B-1 to this Appendix:

28. Claim 1 recites: "An optical transceiver, comprising: a silicon substrate; a transmitter module integrated on the silicon substrate, the transmitter module comprising a laser source optically coupled to at least one Mach-Zehnder modulator configured to modulate an optical carrier signal with electrical data signals at a data rate of at least 100 Gbps per wavelength; a receiver module integrated on the silicon sub

29. Claim 3 recites: "The optical transceiver of claim 1, wherein the coherent detection module comprises: a local oscillator source integrated on the silicon substrate and configured to generate a reference optical signal; a 90-degree optical hybrid coupler configured to mix the incoming coherent optical signal with the reference optical signal to produce at least four mixed optical output signals representing in-ph

30. The limitation at issue for purposes of this DOE analysis is the "coherent detection module" as a whole as recited in Claim 3 — that is, the combination of the local oscillator source, the 90-degree optical hybrid coupler, the balanced photodetectors, and the transimpedance amplifier array, all of which are recited as components of the coherent detection module and are required to be "integrated on the silicon su

III.A.2. Specification Support for "Coherent Detection Module"

31. The '193 Patent specification provides extensive disclosure of the "coherent detection module" and its constituent components. As described in the specification at column 7, lines 14–58, and column 8, lines 1–35, and as illustrated in Figures 3A through 3D, the coherent detection module is an integrated optical receiver component designed to recover both phase and amplitude information from an incoming coherent o

32. Figure 3A of the '193 Patent depicts the overall coherent detection module architecture, showing the local oscillator laser source (element 310), the 90-degree optical hybrid coupler (element 320), the two pairs of balanced photodetectors (elements 330a/330b and 330c/330d), and the transimpedance amplifier array (element 340), all fabricated on a silicon-on-insulator ("SOI") substrate. Figure 3B provides a more d

33. The specification further explains at column 8, lines 12–35, that the monolithic integration of all coherent detection module components on the silicon substrate provides advantages in terms of reduced optical path lengths, improved phase stability between the signal and local oscillator arms, lower power consumption, and reduced manufacturing cost compared to discrete-component coherent receiver assemblies. The

34. With respect to the prosecution history narrowing, the prosecution of the '193 Patent proceeded as follows. As originally filed, Claim 1 recited a "receiver module" without specifying the type of detection employed. The examiner issued a non-final Office Action on March 12, 2019, rejecting Claims 1–10 under 35 U.S.C. § 102(a)(1) as anticipated by Takahashi et al., "Dense WDM Silicon Photonic MUX," IEEE Photonics

35. Critically, the amendment that introduced the "coherent detection module" limitation was directed exclusively to distinguishing the fundamental detection methodology — coherent detection versus direct detection — and not to any particular integration approach for the components of the coherent detection module. The applicant's remarks filed with the September 10, 2019 amendment stated: "Takahashi's receiver emplo

III.A.3. Claim Construction Context

36. The parties filed a Joint Claim Construction Statement pursuant to Patent Rule 4-3 on October 28, 2024, identifying 14 disputed claim terms across the '193 and '015 Patents. The term "coherent detection module" was not among the disputed terms; accordingly, neither party has proposed a construction that departs from its plain and ordinary meaning as understood by a POSITA.

37. However, the related term "integrated on a silicon substrate," which appears in Claim 1 (from which Claim 3 depends) and qualifies the receiver module and its coherent detection module, is a disputed claim construction term. OWS proposes that "integrated on a silicon substrate" means "formed on or within a silicon-based wafer using semiconductor fabrication processes," which would encompass both monolithic integr

38. The Markman hearing on claim construction is scheduled for March 14, 2025, before Judge Gilstrap. The Court's claim construction order has not yet issued as of the date of this Appendix. My DOE analysis is presented in a manner that addresses both possible construction outcomes. If the Court adopts OWS's proposed construction of "integrated on a silicon substrate," my opinion is that Lumicore's products literally

III.B. The Accused Element in Lumicore's Products

III.B.1. Technical Description of Lumicore's Detection Architecture

39. Based on my review of the Benchmark Semiconductor Analysis, LLC teardown reports, Lumicore's design files and RTL schematics produced in discovery, and the deposition testimony of Dr. Sandra Michaud, I have determined the following with respect to the coherent detection architecture employed in the accused Lumicore products.

40. LumiLink 400G-ZR+ (LL-400-ZRP-01). Kevin Ng's December 12, 2022 teardown report for the LumiLink 400G-ZR+ (OWS-BENCH-00001–00187) identified the coherent receiver subsystem as comprising the following components: (a) a silicon photonic integrated circuit ("Si-PIC") fabricated on an SOI substrate, containing waveguide routing, a 90-degree optical hybrid coupler implemented as a 2×4 MMI structure, and two pairs of

41. LumiLink 800G-DR8 (LL-800-DR8-02). Kevin Ng's June 2023 teardown report for the LumiLink 800G-DR8 (OWS-BENCH-00188–00412) confirmed that the 800G product employs the same fundamental coherent detection architecture as the LumiLink 400G-ZR+, with the following specific features: the Si-PIC contains eight parallel coherent receiver channels (compared to four in the 400G-ZR+ module), each channel comprising a 90-deg

42. LumiEdge 1600G-LR (LE-1600-LR-03). Kevin Ng's February 2024 teardown report for the LumiEdge 1600G-LR (OWS-BENCH-00413–00679) confirmed that this newest product employs a similar but evolved version of the hybrid-integrated coherent detection architecture. Specifically, the LumiEdge module features sixteen parallel coherent receiver channels on the Si-PIC, a higher-power InP tunable laser as the local oscillator

43. At deposition, Dr. Sandra Michaud, Lumicore's Chief Technology Officer, described the LumiLink/LumiEdge detection architecture and provided testimony relevant to this analysis. When asked about the function of the coherent detection module in the LumiLink 400G-ZR+, Dr. Michaud testified: "The coherent receiver in our LumiLink product performs coherent detection. It mixes the incoming signal with a local oscillato

44. Dr. Michaud further confirmed that the hybrid-integration approach for the local oscillator was a design choice motivated by performance optimization, not by any fundamental difference in the detection methodology: "Whether the LO is monolithic or hybrid-bonded, the detection scheme is the same. You're mixing signal with LO in a 90-degree hybrid and detecting with balanced photodetectors. The integration method d

III.B.2. Identification of the Non-Literal Element